Collective Membership Marks: Different Trademarks for Different Purposes
Depending on whether you are selling a material product or good or purveying a service, or whether you are engaged in or advertising other pursuits, the US Trademark Act (Lanham Act) allows for the registration of different sorts of registrable and protectible “marks.”
One of these is the Collective Membership Mark.
Unlike a trademark or service mark, this sort of mark does not indicate commercial origin of goods or services.
Instead, it serves a different purpose entirely.
Collective Membership “Trademarks”: A Definition
Unlike copyright or patent law protection, trademark registration does not protect a creator’s “artistic work.”
The purpose of trademark registration is to protect consumers’ right to understand the source and quality of the goods and services that they purchase.
For example, the familiar “Gibson” cursive script, to a guitar-player, means that they are buying a guitar manufactured by the Gibson corporation (“Gibson Brands”) and not some knock-off manufacturer in Korea or elsewhere.
A Collective Membership Mark, on the other hand, is a little different than the standard “trademark” exemplified above.
This sort of mark identifies the registrant’s membership in a collective organization of one sort or another.
Some commonly cited examples are AAA® auto insurance group or FTD® membership for florists.
Collective Marks: Requirements
Despite the above, an application for registration of a Collective Mark with the US Patent and Trademark Office (USPTO) must still allege that the mark is being used in interstate commerce, or will be used in interstate commerce within a finite period of time.
In this case, what must be demonstrated is use of the mark in commerce by the members of the organization.
The applicant must, as with other marks, allege and demonstrate they are the first to use the mark in interstate commerce. (In the US, trademark protection is extended to those that have first used a mark in interstate commerce, not necessarily to those that are simply the first to file a registration application with the USPTO).
The applicant must, as with all other sorts of marks, provide a specimen with their application which will provide an example of the mark’s use in commerce.
The USPTO has allowed such specimens as membership cards, certificates, or even lapel pins, patches, or other items which demonstrate membership in the organization. However, where such ornaments were found by the USPTO to designate qualities other than membership (such as length of service), they were not allowed!
As with other marks, the nature of the collective organization must also be identified and described, and a proper classification must be assigned in the application itself.
Collective Membership Marks: Other Considerations
Ownership of a collective mark is also a primary consideration. While it might be logically presumed that the organization itself owns the mark, this is not necessarily so, particularly when the organization has been created by a third party or a corporate entity other than the association whose members use the mark.
However, to apply to register the mark with the USPTO, the applicant must be an individual or entity capable of suing or being sued in a court of law—and must be entitled to use the mark him-, her-, or itself.
As also with all other marks, there can be no likelihood of confusion as to the use of the proposed mark in commerce.
With regard to Collective Marks, the question here will be whether goods or services offered by someone or something utilizing the mark will be confused for the goods or services offered in commerce by someone or something bearing another mark.
Detroit Trademark Attorneys: The Bottom Line on Collective Membership Marks
The bottom line with regard to the registration of Collective Membership marks is that retention of a knowledgeable trademark lawyer is essential to the success of the application with the USPTO.
Collective Marks offer some unique possibilities for missteps with the application process, and a responsive attorney will be able to move quickly to assist you with an office action or denial by the USPTO in the application of your collective mark.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.
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